All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Wednesday, July 28, 2010

Takeaway: A district court construed "an anchor member ... shaped to normally assume a substantially straight configuration" as "sufficiently straight to be inserted into a needle". Smith & Nephew, Inc. v. Biomet, Inc., No. 05-611-KI (D. Ore. November 21, 2005). The court did not read "normally ... straight" as implying that the anchor must be capable of assuming another configuration (e.g., bent), which would exclude a rigid anchor.

Details: The claim construction was in the context of a motion for preliminary injunction.The asserted claims covered various surgical devices and their methods of use.

The accused infringer, Biomet, asked the court to limit the ancahor member in an apparatus claim to deformable anchors, so as to exclude rigid anchors. For support of this argument, the accused infringer relied on the drawings and the specification. With respect to the drawings, Biomet argued that deformable anchors were the only type of anchors shown. Biomet also explained that the term "normal" was used in the specification only when describing how a resilient, deformable anchor changes from a bent position to an extended ("normal") position.

The patentee, Smith & Nephew, asked the court for a construction of anchor member that allowed either rigid or deformable. Smith & Nephew pointed out that the specification expressly stated that the anchor member "may be formed of a substantially rigid material." Furthermore, a dependent claim recited "the anchor member is formed of resilient material." Smith & Nephew argued that, under the doctrine of claim differentiation, the independent claim should not be
construed to also require that the anchor member be made of resilient
material.

The court agreed with the patentee, and refused to read "deformable" or "resilient" into the claim. The court found the accused infringer's reliance on the specification to be unpersuasive: "Much of the specification cited by Biomet also supports Smith & Nephew's argument." The court seemed most persuaded by the patentee's claim differentiation argument. However, the patentee's argument focused on a dependent claim, where the court looked to an unasserted independent claim (claim 10) to interpret the claim at issue (claim 13).

[Unasserted] Claim 10 contains the disputed phrase "shaped to normally assume a
substantially straight configuration," but also calls for an anchor member that is "formed of resilient material and deformable into the deformed position within the needle tip[.]" It is clear that claim 10 requires a resilient anchor member, while [at issue] claim 13 makes no mention of the material from which the anchor member must be formed. Claim 10 would not need to add the limitation for a resilient
and deformable anchor if that limitation were equivalent to "shaped to normally assume a substantially straight configuration."

My two cents: It was the use of the term "normally" that first interested me in this decision, having recently blogged (here) about the interpretation of "normally" in a BPAI decision. To me, the presence of "normally" in the phrase "shaped to normally assume a substantially straight configuration" strongly implies that another configuration (not straight) must also be possible. To hold otherwise ignores the word "normally." For this reason, I think the claim clearly excludes rigid anchors. The court seemed to overlook this "plain meaning" argument.

I'll go farther and say that "normally" implies not just a flexible member, but a resilient member, i.e., the member springs back to its "normal" shape. A member that is merely capable of flexing between straight and non-straight has two configurations -- but I wouldn't say that one of them is the "normal" shape.

Here's another interesting aspect of the decision:IMHO, it's a case of claim differentiation gone wrong. It's true the doctrine of claim differentiation can be used to compare two independent claims, because the doctrine "creates a presumption that each claim in a patent has a different scope." Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed.Cir.2004). But the Federal Circuit has more recently cautioned that the the doctrine should be applied sparingly when comparing two independent claims, noting that in such a situation "claim differentiation can not broaden claims beyond their correct scope." Curtiss-Wright Flow Control Corp v. Velan Inc., 438 F. 3d 1374, 1381 (Fed. Cir. 2006). I'd say the Oregon ddistrict court in Smith & Nephew, Inc. v. Biomet, Inc., used the doctrine to broaden beyond correct scope, as determined mainly by the plain meaning of "normally."

Curtis-Wright came out after the Oregon district court's decision in Smith & Nephew, Inc. v. Biomet, Inc., so the district court didn't have the benefit of the guidance from Curtis-Wright.

Takeaway: The new PTO guidelines for § 101 examination under Bilski are now available here. The guidelines identify a number of factors that should be weighed to determine whether a method claim is directed to an abstract idea, and is thus ineligible for patent protection under 101. The factors include:

Execution by a machine — weighs against an abstract idea

Transformation of an article — weighs against an abstract idea

Application of a Law of Nature — weighs in favor of an abstract idea

General principle involved in executing the method — weighs in favor of an abstract idea

The claims should be examined for all requirements for patentability, not just § 101. Only in the the most extreme case should an Examiner treat a § 101 rejection as a barrier preventing examination under § 102/103 and § 112.

The Examiner should provide a "clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patentability."

My two cents: Note that the guidelines speak only of method claims. Thus, I would expect Examiners to stop applying "abstract idea" to apparatus, system, or computer-readable medium claims. I find this encouraging, since I understand that the Solicitor's office looked carefully into the case law in drafting these guidelines. So far, the district courts and the BPAI have routinely applied "abstract idea" to all types of claims. I wonder if the BPAI will take a look at the Examiner guidelines. [Perhaps they should not, as a matter of policy, in order to keep some degree of judicial independence.]

As soon as Bilski was released, the PTO released a memo to Examiners indicating that guidelines were in the works, and a one paragraph summary of how Examiners were to handle Bilski in the meantime. The summary said that a method claim that fails the Machine-or-Transformation test should be rejected under § 101 absent a
"clear indication" that it is not directed to an abstract idea. A number of practitioners expressed concern about the phrasing used the memo, interpreting this as shifting the burden to the applicant to show patent eligibility before the PTO even made a prima facie case. (For example, see the guest post here on PatentlyO.) The PTO's guidelines specifically state that the Examiner must establish a prima facie case. I'm interested to see if this statement allays those concerns. I speculated in an earlier post on whether the Machine-or-Transformation was a safe harbor, such that passing MoT ended the analysis. The PTO guidelines have a clear answer to this question. Machine is a factor, as is Transformation. But the ultimate issue is whether or not a claim is directed to an "abstract idea." Thus, it's theoretically possible under the guidelines that a given claim could be executed by a machine and transform an article, and still not be patentable subject matter, if the remaining factors outweigh the first two.

Tuesday, July 27, 2010

Takeaway: In the latest BPAI decision to consider a § 101 rejection, the BPAI analyzed method claims using the Machine-or-Transformation test and then analyzed under the "abstract idea" test. The abstract idea analysis used "one of the [Supreme] Court’s precedential tools (i.e., the case of Gottschalk v. Benson)." The claims failed the machine prong despite the recitation of a "distributed processing unit" since the claims didn't explicitly tie the claimed computation to the unit. The "mere statistical analysis computations" of the claims did not satisfy the transformation prong. Finally, "Appellants’ computational process claim is comparable with the algorithm to convert binary-coded decimal numerals into pure binary code in Benson, in that Appellants seek to patent an idea." The Board then affirmed the § 101 under Benson.

Details: Representative claim 8 recited:

8. In a data processing system including distributed processing units, a method of analysis of performance of the data processing system, said method comprising:
each of the distributed processing units accumulating performance parameters including response time measurements and workload across intervals of time,
said each of the distributed processing units storing the performance parameters accumulated by said each of the distributed processing units in an industry standard database in said each of the distributed processing units; and accessing the industry standard databases over the data processing system to retrieve the performance parameters accumulated by the distributed processing units, anddetermining a measure of performance of the data processing system from the retrieved performance parameters;
wherein the industry standard database is the Windows Management Instrumentation database,
and the method includes said each distributed processing unit using an operating system to store the performance parameters accumulated by said each of the distributed processing units in the Windows Management Instrumentation database;
wherein the measure of performance of the data processing system is a measure of metric entropy of the data processing system, and the measure of metric entropy of the data processing system is computed from the performance parameters retrieved from the industry standard database by computing an average response time over the distributed processing units,computing a histogram of the average response time over the distributed processing units, andcomputing the measure of metric entropy of the data processing system from the histogram.

My two cents: Good to know what the Board is thinking in terms of abstract idea. But it's not clear whether abstract idea analyis is *required*. The Board said:

However, our guidance from the Supreme Court in Bilski v. Kappos, cited above, states that the machine-or-transformation test is not the endpoint for our inquiry under 35 U.S.C. § 101. We thus analyze claim 8 under one of the Court’s precedential tools (i.e., the case of Gottschalk v. Benson)

Was the Board's abstract idea analysis required, or just dicta? Plenty of practitioners think that MoT is a safe harbor. Yet with the Supreme Court's focus on abstract-ideas-are-not-patentable-subject-matter, I'm worried that MoT is not a safe harbor. We won't know until we get a BPAI decision that finds MoT = PASS and Abstract Idea = FAIL. [Unless the Federal Circuit addresses this question first.]

Takeaway: A month after Bilski v. Kappos, and we now have Ex parte Bigler, the second decision from the BPAI addressing § 101 in the post-Bilski world. The Board upheld the Examiner's § 101 rejection, finding that all claims were "directed to software per se." The rejected claims included methods, computer-readable media, and systems. The Board found that the processor recited in the system claim was not hardware.

Details: The method claim recited two steps of sending messages:
A method for communicating between two endpoints connected to a network, the method comprising
having a first endpoint use a global address of a second endpoint to communicate with the second endpoint, wherein:
the global address specifies a protocol, a network identifier, and an address meaningful for the combination of the protocol and a network identified by the network identifier,
an application sends messages directed to the second endpoint through an identity-based communication layer that is situated between a network layer and an application layer, the messages being independent of the protocol, and
the identity-based communication layer transmits the messages to the
second endpoint using the protocol, the network, and the address specified
by the global address.

The Board applied the same "software per se" analysis to the computer-readable media claims,. The Board also held the media claims to be unpatentable under In re Nuijten because they included "transitory signaling embodiments."

With regard to the system claims, the Board found that these claims recited the same subject matter as the method claims. The system claim included "a processor connected to a storage device and one or more input/output devices." However, neither processor nor device ensured statutory subject matter:

Based on the manner in which claim 52, for example, recites the claimed processor, it is not necessarily hardware or a computer itself, and no computer is directly claimed either in the preamble of this claim or the body of the claim.
...
[T]he expansive scope of the term “device” is intended to encompass data objects themselves, such as objects of data associated with or within a software environment, or software objects as well. Thus, a “device” is a nonce word of substantially broad scope having an optional meaning intended to be attributed to it as disclosed and, in fact, amounts to an abstraction in its own sense. A “device” in this application is not necessarily a physical device.

My two cents: Once again the Board jumps from "software" to "software per se." Yes, the components recited in the claims do sound like software components. But how did we get from "software" to "software per se"? The Applicant never said "per se." We need a case where the Applicant puts some evidence in the record on what these terms mean to a POSITA. If we have evidence on the record that "software" is understood as instructions executing on a processor, then maybe the Board would have to do some real analysis as to whether that is patentable subject matter. Until then, it appears that the Board will merely chant the magic incantation "software per se."

The Board's finding that "a 'device' in this application is not necessarily a physical device" is ridiculous. The spec consistently uses device to refer to computing hardware, and uses device application to refer to the software executing on the device. Note that the Board doesn't cite to any portions of the spec when making this conclusory statement.

The Board's finding that a processor isn't necessarily hardware is almost as ridiculous. The spec does use the term "flow processor" in a way that suggests a "flow processor" is software, but I say that the generic term "processor" is understood differently.

Monday, July 26, 2010

Takeaway: In Ex parte Morooka, the BPAI reversed an enablement rejection because the rejection amounted to a general allegation that inadequate information was disclosed rather than a "reasonable explanation as to why the scope of protection provided by claims required undue experimentation." An indefiniteness rejection was also reversed because the rejection contained a series of questions rather pointing to "any particular language in the claims that a person skilled in the field of the invention would not reasonably understand when read in the context of the Specification."

Details: The Applicant's claims included “an adhesive whose total quantity of gas detected when analysis using gas chromatograph mass spectrometry is conducted under test conditions of 180 °C and 10 minutes is 100.5 μg/g or less in n-tetradecane.” The Examiner's enablement rejection alleged that the Applicant had not provided adequate information about the molecular structure of adhesive or enough comparative data for other adhesives under the claimed test conditions.

The Board reversed the enablement rejection. The Board found that the Examiner's concerns about molecular structure and comparative data were either addressed by the spec or could be determined without undue experimentation using spectrometry. The Board further noted "none of the Examiner’s above-noted questions and allegations addresses the Wands factors," which is the appropriate framework for enablement analysis.

Turning to the indefiniteness rejection, the rejection consisted of a general allegation "it is far from clear or certain what the scope or metes and bounds of the claimed invention are" followed by a series of question:

what are the molecular weight distributions of the polymeric materials that can be used?

what is the average molecular weight of the polymer which can be used?

what is the sample size of the material that is used?

what is the moisture content of the sample size?

what actually is the Appellants’ definition of the term ‘adhesive’?

what comprises n-tetra-decane?

what are some of the specific adhesives (by common or IUPAC names) which would be excluded and why?

The Board reversed because the Examiner did not explain why answers to those any of questions are necessary for a POSITA "to reasonably understand the scope of the claim when read in light of the Specification," which is the appropriate standard for indefiniteness. The Board also found that the last three questions were either answered by the specification or were understood by a POSITA.

My two cents: Since the Board made a factual finding that the spec did enable the claims, the Board's comments about the deficiencies in the Examiner's rejection could be considered dicta. Even so, the next time I get a vague enablement rejection, I'll definitely consider traversing with a statement that the appropriate standard is a "reasonable explanation as to why the scope of protection provided by claims required undue experimentation." Similarly, if I get an indefiniteness rejection which is nothing more than a series of questions, I'll probably traverse by insisting that the Examiner apply the appropriate standard for indefiniteness.

Sunday, July 25, 2010

Director Kappos has a new vision for the MPEP, one that "uses 21st century authoring and contributing techniques". Kappos has blogged about "Reengineering the MPEP" here and here. His second post notes that after soliciting comments, "there was broad consensus that the USPTO should be the keeper of the official
version of the text, but that it would be useful to have outside
contributions to the content, in several different forms."

A new revision to the MPEP has just been released: Revision 8 of the Eighth Edition. It's available on the PTO website here (via same link as before).

Look at the "Blue Pages" to see what's changed. All I'm gonna say is: no huge changes. But if you prosecute patents for a living, the MPEP is important enough for see for yourself what's changed. If not, the MPEP isn't important to you, so don't bother.

So far, Revision 8 is only available in per-chapter PDF. I expect the PTO will eventually provide in HTML form also.

Wednesday, July 21, 2010

Takeaway: The Examiner interpreted "assigning an identification number to each of a plurality of micro-operations" as reading on assigning the same identifier to all operations. The Board agreed with this construction, finding that the claim does not require assignment of a separate or unique identifier. Don't assume that if you claim multiple instances of a widget those multiple instances will be interpreted as being different.

The claims were directed to microprocessor technology, and specifically, to multiple branch paths in a microprocessor. The Applicant attempted to distinguish the reference by arguing that "Sharangapani teaches a single assignment to a group of instructions rather than an assignment to 'each of a plurality of micro-operations'." The Applicant further argued that "the cited claim language as a whole explicitly requires that a separate ID is assigned to each of a plurality of micro-operations."

The Board found:

Here, claim 1 does not require that the ID assigned to each operation be "separate" i.e., unique. We refuse to read such a requirement into the representative claim. Assigning the same ID to each micro-operation in one of the reference's instruction streams is enough to anticipate the disputed limitations.

My two cents: This is an example of what I call devious claim construction: the Examiner/Board interpreted the claim in a way that is unconventional, but is perhaps not as unreasonable as it appears at first glance, once you've heard the explanation.

I can think of various ways to express the feature of assigning different identifiers.

#1: assigning a different identifier to each of a plurality of micro-operations

#2: assigning each of a plurality of different identifiers to each of a plurality of micro-operations

#3: assigning a different one of a plurality of identifiers to each of a plurality of micro-operations

#4: assigning a different identifier of a plurality of identifiers to each of a plurality of micro-operations

#5: uniquely assigning an identifier to each of a plurality of micro-operations

I think #1 may be broader than #2, because #2 may be interpreted as 1:1 correspondence between ids and ops. In other words, #1 definitely allows 5 identifiers and 4 ops, leaving one identifier unused. Where with #2 the accused infringer might argue that in such a case, "each" of the 5 identifiers was not assigned.

Some would say that #3 limits you to a single identifier per operation, but that there is no such limitation in #1 or #2 (one vs. a).

#2, #3 and #4 may be more convenient if you want to refer later in in the claim to the plurality of different identifiers. Some Examiners may tell you that there is no antecedent basis for the
plurality of different identifiers in the #1.

I don't like #5 because I think the accused infringer will argue that "unique" is way more narrow than "different." As in, "unique across all the world and across all time." On the other hand, "differently assigning" just sounds kinda funny. But in some scenarios, modifying the verb (assigning) rather than the noun (identifier) might give you different scope.

Related Posts: I see the basic issue here as a variation on "ambiguous relationships between elements", which I posted about here.

Monday, July 19, 2010

Takeaway: What does it mean when a claim refers to a "normal" state of a material? This question came up in Ex parte Fleming, and the applicant lost the appeal because the meaning chosen by the BPAI was not the one expected by the applicant. This case is a good reminder to think carefully about how a claim could be interpreted in a way you don't expect, and to pay close attention to what the Examiner says about how he is interpreting the claim.

The Applicant appealed a claim to a stent (a tube inserted into a blood vessel) which
included a lattice with a closed (unexpanded) configuration and an open
(expanded) configuration. The claim also defined the lattice as "made of
a material that is normally prone to crushing,
deformation or recoil."

The decision hinged on whether the term "normal" referred to the lattice in its unexpanded configuration or its expanded
configuration.

In the Appeal Brief, the Applicant explained in some detail why the stent in the reference would not function properly if made of a material that was prone to crushing, deformation or recoil. However, the Applicant's argument assumed that the the "normally prone to" language referred to the expanded state. Yet the Examiner explained – in the final rejection, and then again in the Answer – that he was interpreting "normally" as referring to the unexpanded state, before the loops in the lattice interlocked.

The Board noted that:

It is not disputed that prior to deployment and interlocking, Stenzel's stent is designed to be flexible and therefore at least prone to deformation ... Thus, if we adopt the Examiner's construction of the term "normally," Stenzel clearly meets the claim.

The Applicant's specification described how the interlocked hoops in the lattice allow use of materials not appropriate "in traditional stents," such as materials "that exhibit crushing or recoil upon deployment of the stent." However, the Board refused to interpret "normally" as "upon deployment," stating that to do so would be to import limitations into the claims. The Board then stated that the Examiner's interpretation of "normally" (i.e., in the unexpanded state) was reasonable and not inconsistent with the specification, and affirmed the anticipation rejection.

My two cents: I've seen plenty of file histories where the Examiner's reading of the reference and/or the claims wasn't clear until the Examiner's Answer – but this wasn't one of them. It appears to me that the Applicant didn't really pay attention to what the Examiner was saying. Amending the claims from "normally" to "upon deployment of the stent" would probably have overcome the anticipation rejection. On the other hand, the Examiner also gave a "obvious in the alternative" rejection using the same reference, and the Board found that even using the Applicant's claim interpretation, the claim was obvious. So the application was probably doomed anyway.

I also wonder if "normally prone to" accurately describes the material (as the Applicant claimed), or should instead describe the lattice (the claimed element). The way I see it, the properties of the plastic itself don't change. Instead the properties of the lattice as a whole change when the hoops in the lattice lock together in the expanded state. So, I think "made of
a material that is prone to crushing,
deformation or recoil when the lattice is in the expanded state" is a better way to express the feature.

Sunday, July 18, 2010

Earlier this year, the Federal Circuit ruled in Wyeth v. Kappos that the PTO had been miscalcuating patent term adjustment (PTA) under 35 U.S.C. § 154(b). In response, the PTO announced that it would revise its PTA calculation software to comply with Wyeth. In the meantime, the PTO enacted an temporary expedited procedure allowing patentees to request PTA recalculation. Because the procedure is expected to be temporary, the PTO is making it available only for patents issued between August 1, 2009 and March 2, 2010.

PatentDocs reports here that the Swiss pharma company Novartis has filed a lawsuit challenging the inapplicability of the procedure to "older patents." The basis for the challenge was "arbitrary and capricious" treatment under the Administrative Procedure Act. The lawsuit also asks for the district court to recalculate PTA for eleven Novartis patents.

If you want more background, PatentDocs has coverage of Wyeth v Kappos here and the PTO interim procedure here.

The new patent blog PharmaPatents has an interesting post here
called "Three Easy Solutions to the McKesson Problem." This post suggests several steps which the PTO could implement to reduce the burden of filing IDSes.

If you didn't realize how serious the burden can be under existing PTO rules, read the article "The Exponential Burden of McKesson" (here) in Intellectual Property Today. The article details the costs of cross-citing pending applications and Office Actions in those applications, as some practitioners think is prudent under McKesson Information
Solutions, Inc. v. Bridge Medical, Inc.

Wednesday, July 14, 2010

In the recent case Encyclopaedia Britannica v. Alpine Electronics of America (2009-1544), the Federal Circuit held that each application in a chain of priority must contain a specific reference to all of the prior
applications. The PTO already takes this position (see MPEP 201.11), and I didn't realize that this was an open issue as far as the courts are concerned.

Another open issue was mentioned in the last paragraph of Encyclopaedia Britannica:

We therefore leave for another day whether filing a continuation on the day the parent issues results in applications that are co-pending as required by the statute.

The PTO considers same day filing good enough. (See MPEP 201.11.) And once again I was surprised to find the Federal Circuit hasn't ruled on this particular issue yet.

Tuesday, July 13, 2010

Takeaway: In a case of statutory construction of § 102(e), the Federal Circuit confirmed the long standing PTO practice of using the provisional filing date as the effective filing date of a US patent or patent publication claiming priority to that provisional. See In re Giacomini (CAFC
2009-1400). This decision also confirms that to obtain this priority date, the patent or patent publication must provide written description support under § 112 First, though that wasn't at issue in this particular case.

My two cents: Nothing new here. This has been PTO practice for years (see MPEP 2163.04), and the BPAI upheld the PTO practice in Ex parte Yamaguchi, a precedential decision from a couple of years ago. But apparently this is the first time the Federal Circuit has actually addressed the issue.

Related posts: I also blogged here and here about Giacomini and the 102(e) issue. Giacomini at the BPAI also involved an interesting indefiniteness issue, which I blogged about here.

Monday, July 12, 2010

Takeaway: In Ex parte Robson, the Examiner issued an enablement rejection for a claim reciting "at least one guide rail" and gave two reasons for the rejection. First, two different structures could meet these claim limitations. Second, under one of those interpretations, the disclosure described only embodiments with a single guide rail. The BPAI reversed the rejection. Addressing the first reason, the Board stated that figuring out which one of two structures was claimed does not amount to undue experimentation. Addressing the second reason, the Board then noted that the phrase "at least one" "encompass[ed] within its scope one guide rail or more than one guide rail." Since the Examiner did not explain why undue experimentation would be required to make and use embodiments with more than one guide rail, the enablement rejection was in error.

As part of the enablement rejection, the Examiner first interpreted the term "guide rail," finding two alternative constructions. The BPAI rejected one of those constructions, and so only addressed enablement under the second, in which projection 130 corresponded to the claimed "guide rail." The BPAI then found that:

The Examiner presented no findings, rationale, or analysis as to why it would require, or how it would amount to, undue experimentation on the part of persons of ordinary skill in the art to make and use other embodiments falling within the scope of those terms, i.e., embodiments having more than one projection 130 ...

My two cents: I agreed with the reversal of the rejection, though I don't see why the Board discussed undue experimentation.Yes, it's generally the appropriate standard for enablement (see MPEP 2164.01), though Examiners don't always deal with it in this manner. However, it seems to me you don't even need to address undue experimentation if you have explicit disclosure, and I think that's the case here.

The Board decided that the claimed "guide rail" was supported by disclosed projection 130. That should have been the end of the analysis: the claim recites "at least one guide rail"; that limitation is met by the single disclosed projection 130. The fact that more than one guide rail/projection anticipates or infringes seems to me irrelevant to the enablement analysis.

I can see that the undue experimentation analysis could come into play – theoretically – if the specification disclosed a single guide rail yet claimed a plurality of guide rails. On the other hand, can you think of a real scenario where undue experimentation would be needed to get from one instance of a part to multiple instances of the same part?

On the other hand, disclosing a single X yet claiming multiple Xes might get you a Written Description rejection (for original claims) or a New Matter objection (for amended claims). Sure, you can figure out how to make an embodiment with multiple Xes ... but did you really contemplate that possibility such that you possessed multiple Xes?

In fact, that's essentially the position the Examiner took in Robson. The Examiner's Answer explained that a New Matter objection might be appropriate, but not until the issue of alternative interpretations for "guide rail" raised by the Examiner was settled. The Answer went on to state that if the Board decided that the claimed guide rail corresponded to projection 130, then a new matter rejection would be appropriate and in such case "the examiner requests that the appeal be remanded so that a new matter rejection may be made."

You probably won't be surprised to hear that the application in Robson was a continuation, since Written Description and New Matter issues are more likely in continuations. The continuation also claimed priority to a foreign (UK) application, and the claims at issue looked quite different than the foreign claims.

Sunday, July 11, 2010

Takeaway: It took about two weeks for the BPAI to release the first decision applying Bilski v. Kappos: Ex parte Proudler. In this decision, the Board entered a new ground of rejection under § 101. Citing Bilski v. Kappos for the proposition that abstract ideas are unpatentable, the Board determined that the "computer apparatus" claim was directed to an abstract idea. "The manner in which the so-called 'computer apparatus' of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses 'programming for' achieving a certain abstract functionality. Thus, no true hardware structure is recited."

This application involves secure computing, and the claims are directed to applying individualized security rules to data items. On appeal were four independent claims: two method claims, a computer readable medium claim, and a computer apparatus claim. The Board vacated the prior art rejections, raised a new rejection under § 101, and remanded to the Examiner.

The Board found that:

[The] claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal.

The Board said that the language of the computer apparatus claim clearly showed that the claim was directed to an abstract idea:

The manner in which the so-called 'computer apparatus' of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses 'programming for' achieving a certain abstract functionality. Thus, no true hardware structure is recited."

In making this determination, the Board seemed to rely on two statements in the specification. One was the Abstract, which restated the method claim and mentioned a "computing entity." Another statement in the specification said that "A computing entity, either hardware or software, is often called a 'node' and this term will appear hereinafter."

The Board used the same reasoning to find that the method claim was directed to an abstract idea, since it recited "computing entity" in the body. The Board used different reasoning to reject the computer readable medium claim: that claim encompassed signals per se, which are unpatentable under In re Nuijten.

My two cents: I have two comments about Proudler. First, the BPAI did not use the Machine-or Transformation test in it's § 101
analysis, and instead used "abstract ideas." Yet the Board's stated
reason for finding that the computer apparatus claim was directed to an
abstract idea was "no true hardware structure was required." How is
this any different than applying the Machine-or-Transformation test? Is
"abstract idea" just another way of stating "not tied to a particular
machine" ?

My second comment about Proudler: this case shows the danger of being vague about what you mean by "software." Examiners, the BPAI, and the courts seem to think that the term "software" implies "not tied to hardware." If your claim sounds like "software" – even if the claim doesn't contain that term – the BPAI will redesignate them as "software per se." By which they seem to mean "software in the abstract," or as I call it, "software floating in the ether."

Speaking as a former POSITA, that's not what the term "software" means to me. I say "software" means "instructions executing on a processor." That is, software is tied to hardware, and as such, is not "abstract."

I suppose you can try making this argument in an expert declaration. But I think a better approach to avoid/overcome a § 101 rejection for "software per se" is a specification that explains what is meant by the terms "software" and "hardware," and explains the relationship between the two. Other Posts on Ex parte Proudler: This decision has generated a fair amount of discussion in the blogosophere. If you want some other viewpoints, including some from non-patent attorneys, check out these posts:Patents4SoftwareVisae PatentesGroklawSoftware Freedom Law CenterArsTechnica

Tuesday, July 6, 2010

Takeaway: Invalidation under the on-sale bar of § 102(b) usually involves a sale of the patentee's product. However, the sale can actually be of any product, by any party, as long as it embodies the claims. In Cummings v. Adidas USA, 08 Civ. 9860 (S.D.N.Y 2010), one of the accused infringers raised the on-sale bar defense using its own accused product, and won on summary judgment.

Details: An invalidity defense under the on-sale bar of § 102(b) requires a) sale or offer for sale more than one year before the critical date of b) a product that was ready for patenting at the time of the sale and which c) anticipates the claims. Nike didn't even need to offer evidence that the product anticipated: that burden of proof was satisfied by the patentee's allegation of infringement. All Nike had to do was provide evidence that the accused product was materially identical to the product offered for sale. As for the other two requirements, Nike presented uncontroverted evidence that Nike sold samples of the accused product to showrooms and sales representatives more than one year before the patent's filing date. The court granted Nike's motion for summary judgment of invalidity.

Monday, July 5, 2010

In Bilski v. Kappos, the Supreme Court told us that the machine-or-transformation test is not an exclusive test for § 101, and that business methods are not categorically prohibited by § 101. But Bilski v. Kappos also reiterated that abstract ideas aren't patentable – without providing much guidance on what is and isn't "abstract." Also, more than 18 months after the Federal Circuit's decision in In re Bilski, we still don't have any guidance from a court of appeal about applying the machine-or-transformation test – in particular, what constitutes a "particular machine" and what actions are considered "transformations." The good news is that the PTO and the Federal Circuit are both gearing up to answer the questions left unanswered by Bilski v. Kappos.

How will Examiners apply Bilski? The PTO is already working on new Examination Guidelines for § 101. A PTO memo issued to Examiners immediately after Bilski v. Kappos gives us a preview of those guidelines. The memo incorporates both "machine-or-transformation" (MoT) and "abstract idea," as follows:

If a method passes the MoT test it is "likely" okay under § 101 absent a "clear indication" that it's directed to an abstract idea.

If a method fails the MoT test it should be rejected under § 101 absent a "clear indication" that it is not directed to an abstract idea.

What's next at the BPAI: I don't expect outcomes at the Board to change very much as a result of Bilski v. Kappos. Although the MoT test is no longer an exclusive test, Appellants with cases pending at the BPAI haven't had a chance to argue any other test. And while Bilski v. Kappos seemed to depart from In re Bilski by discussing "abstract ideas" outside of the MoT test, the BPAI is already considering "abstract idea" in many of its decisions. (See, e.g., Ex parte Benny, holding that a claim to "an information contract" is unpatentable as an abstract idea; Ex parte Vorchik, holding that claims to "software components / interfaces, software modules, [and] wizard application programs per se" are unpatentable as abstract ideas.)

Finally, Bilski v. Kappos is absolutely silent on the meaning of "particular machine" and "transformation." Therefore, the BPAI will probably act as before, and I expect to see more decisions holding that a general purpose computer isn't a particular machine (Ex parte Langemyr) and that a physical article must be transformed (see, e.g., Ex parte Avinash, a temporal change image is not an "article").

What's next at the Federal Circuit: The Federal Circuit has a number of cases already on its docket that involve § 101 issues. In applying Bilski v. Kappos in these cases, the Federal Circuit will almost certainly provide more guidance on the MoT and "abstract idea" tests.

Three district court decisions on biotech patents are up for review by the Federal Circuit. Two were vacated and remanded by the Supreme Court after Bilski v Kappos. Prometheus Laboratories, Inc. v. Mayo Collaborative Services involves a treatment method and Classen Immunotherapies, Inc. v. Biogen Idec. involves a diagnostic method. (See this post at Patent Docs for a summary of the § 101 issues in both cases.) The third, Association for Molecular Pathology et al. v. PTO, involves composition of matter claims directed to isolated DNA. (See this post at Parent Baristas for a summary of the case.)

The Federal Circuit's docket also includes six district court decisions which used the machine-or-transformation test from In re Bilski to invalidate claims in various computer software patents. I'll give a quick review of the § 101 issues in each case.

Fort Properties, Inc. v. American Master Lease, LLC, No. 8:07-cv-365, slip op. (C.D. Cal. Jan. 22, 2009), No. 2009-1242 (Fed. Cir. Jun. 11, 2009) involves claims to "a method of creating a real estate investment instrument." The claims do not recite a machine of any kind, and the district court found that, like Bilski, only legal obligations and relationships were transformed. Since these claims are somewhat similar to Bilski, the Federal Circuit review of this case may not be that interesting.

Two cases will give the Federal Circuit an opportunity to discuss the "particular machine" requirement. DealerTrack, Inc. v. Huber, No. 06-cv-2335, slip op. (C.D. Cal. Jul. 7, 2009), No. 2009-1566 and No. 2009-1588 (Fed. Cir. Oct. 27, 2009) involves various "computer aided method[s]" which recite computer hardware in the form of "entry and display device" and "terminal device." The patentee argued that the devices were particular machines because they were "specially programmed," but the court found that the patent did not describe the programming. Thus, the claimed devices read on any personal computer or terminal and so were not "particular machines." FuzzySharp Technologies. Inc. v. 3D Labs Inc., Ltd. No. C-07-5948 (N.D. Cal. Dec. 11, 2009), No. 2010-1160 (Fed. Cir. Mar. 25, 2010), involves several method claims which include "computer graphics" in the preamble. A subset of the method claims recite "performed in a computer." The district court found that "a computer" is not a particular machine, citing DealerTrack and various BPAI decisions.

At issue in Every Penny Counts v. Bank of America, No. 2:07-cv-042, (M.D. Fla. May 27, 2009) is a system claim which includes elements such as a network, entry means, and identification entering means. The district court held that the system claim is really directed to "a process, not a machine." Although the claim was literally directed to a system, the court characterized the machine's involvement as insignificant extra-solution activity.

In Research Corporation Technologies, Inc. v. Microsoft Corp., No. 01-cv-658, slip op. (D. Ariz. Jul. 28, 2009), the district court found that all the claims failed the particular machine prong, including apparatus claims that include "a comparator for comparing." The court held that a comparator is not a "particular machine" because under the court's claim construction a comparator includes a "collection of operations that performs an algorithm," which is software per se.

Finally, in CyberSource Corp. v. Retail Decisions, Inc., No. 3:04-cv-03268, slip op.
(N.D. Cal. Mar. 27, 2009) the district court held that a computer-readable medium claim is not exempt from the machine-or-transformation test. CyberSource also discussed the particular machine and transformation prongs in the context of a "method for verifying the validity of a credit card
transaction over the Internet." The district court held that the
claimed manipulation of credit card numbers did not amount to a
transformation, and even if it did, a credit card number is not a
physical object. As for the "particular machine" prong, no computer was
recited and the court held that "the Internet" was a network of
millions of individual machines (rather than a particular machine), and
was furthermore an abstraction. ("One can touch a computer or a network
cable, but one cannot touch 'the internet'.")

Thursday, July 1, 2010

Takeaway: The BPAI has held in a number of cases that a claim is not rendered indefinite because it refers to a standard (e.g., the IEEE 802.14 standard, commonly known as "WiFi"). In some of these cases, the BPAI also said that the claim was to be interpreted according to the standard in effect at the time of filing.

Details: I found four different cases where an Examiner rejected a claim as indefinite for reciting a standard. In each case, the Examiner's rationale was simply that the claim was indefinite because the standard is subject to change over time. In all four cases, the Board reversed the rejection, reasoning that although a standard may change over time, a particular version of that standard was in existence on the application's filing date, so the claim was not indefinite. (Ex parte McClary, claim recited "ARINC 615 protocol"; Ex parte Ly, claim recited copper "designated by reference used in French standard NF A 51050"; Ex parte Smith, claim referred to a color change "in CIELAB value b*", where CIELAB refers to a color model incorporated into an industry standard; Ex parte Fiala, claim referred to polyethylene selected per a particular ASTM materials standard).

In Ex parte Matsumara (1996 WL 1771396, Appeal No. 94-2397), the Board overturned the indefiniteness rejection for the same reason, and further noted that: "[t]he fact that the terms cover every video standard of NTSC for video data and video signals means the terms are broad. ... The Examiner had confused breadth with indefiniteness."

The Board discussed (in dicta) the effect that referring to a standard has on claim construction in Ex parte Ly:

Even if the common definition of that term should change over time, the ordinary meaning of the term as it would have been understood by one having ordinary skill in the art at the time of the invention controls. In the same way, should the French standard of claims 5 and 17 change over time, the scope of the claims remains tied to the standard in effect at the time the application was filed. By referencing the type of copper in French Standard NF A 51-050 in the claims, the claims incorporate that standard as it existed on the effective filing date.

My two cents: Though I can understand the BPAI's reasoning, I was bothered by the BPAI's statement that claim scope is tied to the standard in effect at the time of filing. Does that mean a claim that recites "wherein the LAN interface is an 802.14 interface" won't cover future versions of WiFi? If so, isn't the claim almost worthless in practice, since it's by the time the patent issues, the WiFi standard will have evolved?

How do you interpret a claim that recites "the IP protocol"? IPv6 was originally defined back in 1998, yet as of 2008, 98% of the world's networking equipment still used IPv4. So, in an application filed in 2000, does a claim reciting "the IP protocol" refer to IPv4, IPv6, or both? Or is indefinite because two versions of the standard coexisted?

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